Ex Parte Weirauch

Board of Patent Appeals and Interferences

Jul 30, 2004

09286413 (B.P.A.I. Jul. 30, 2004)

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The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte CHARLES R. WEIRAUCH
________________
Appeal No. 2003-0779
Application 09/286,413
________________
ON BRIEF
________________
Before THOMAS, JERRY SMITH and BARRETT, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 8-11, which constitute
all the claims remaining in the application.
The disclosed invention pertains to a method for
recording data on an optical disc that can be used to record
digital audio and digital video data as well as computer data.
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The optical disc in accordance with the invention has a user-data
area that it a single contiguous zone so that video and audio
data can be continuous. Replacement areas for computer data are
located outside the user-data area.
Representative claim 8 is reproduced as follows:
8. A method for recording data on an optical disc, the
method comprising the following steps:
writing data in a user-data area of the optical disc;
encountering a defective area;
writing data intended for the defective area in a
replacement area; and
copying, the data from the replacement area of the defective
area to form contiguous data in the user-data area.
The examiner relies on the following reference:
Dobbek et al. (Dobbek) 6,034,831 Mar. 7, 2000
(filed May 09, 1997)
Claims 8-11 stand rejected under 35 U.S.C. § 112, first
paragraph, as containing subject matter which was not described
in the specification in such a way as to reasonably convey to one
skilled in the relevant art that the inventor, at the time the
application was filed, had possession of the claimed invention.
Claims 8-11 also stand rejected under 35 U.S.C. § 103(a). As
evidence of obviousness the examiner offers Dobbek taken alone.
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Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
prior art rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejections and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the claimed invention is supported by the specification
as originally filed. We are also of the view that the evidence
relied upon and the level of skill in the particular art would
not have suggested to one of ordinary skill in the art the
obviousness of the invention as set forth in claims 8-11.
Accordingly, we reverse.
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Application 09/286,413
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We consider first the rejection of claims 8-11 under the
first paragraph of 35 U.S.C. § 112. The rejection states that
“[t]he specification does not show ‘copying the data from the
replacement area to the defective area.’ None of the figures or
pages 4 and 5 show the use of recording the same data onto the
replacement area and then copying the data back into the
defective area of the disk as being claimed” [answer, page 4].
With respect to claims 10 and 11, appellant points to
portions of the application which are alleged to show the
invention of these claims. With respect to claims 8 and 9,
appellant argues that even though the specification does not
literally state that data is copied to the defective area, the
overall description of the invention makes it clear that the
defective areas are used to store the replacement data to form a
contiguous user-data area [brief, pages 6-8].
The examiner is not persuaded by appellant’s arguments.
The examiner again responds that there is no support for
recording the same data onto the replacement area and the
defective area of the disk [answer, page 6].
We will not sustain this rejection of the claims on
appeal for essentially the reasons argued by appellant in the
main brief. We agree with appellant that the description of the
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invention as a whole indicates that data is recorded in both the
defective areas of the user-data area of the disk as well as the
replacement area of the disk. The examiner’s position that data
cannot be recorded in the defective areas is simply wrong. The
specification makes it clear that defective areas of the disk may
be used when reading audio and video data because the defects are
not noticeable. Thus, it is clear that the invention uses the
defective areas for reading audio and video data, but uses
replacement areas for reading computer data. The disclosure of a
continuous user-data area on the disk supports the recitations in
the claims that data in the replacement area of the disk is also
recorded in the defective areas of the user-data area of the
disk. Therefore, we find that the specification as originally
filed supports the invention that is now being claimed.
We now consider the rejection of claims 8-11 under 35
U.S.C. § 103. In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
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having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
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actually made by appellant have been considered in this decision.
Arguments which appellant could have made but chose not to make
in the brief have not been considered and are deemed to be waived
[see 37 CFR § 1.192(a)].
With respect to claims 8-11, the examiner states that
“[t]he claims are interpreted to read on assigning the defective
sectors during recording data on a disk” [answer, page 5]. The
examiner finds that the claims are met by the reference since the
reference shows the use of defective data management that
utilizes the use of replacement sectors.
Appellant argues that Dobbek does not teach or suggest
contiguous data in the user-data area, and in fact, that Dobbek
expressly teaches away from contiguous data in the user-data
area. Appellant observes that Dobbek does not teach or suggest
that all defective sectors are used so that the user-data is not
contiguous. Appellant argues that the data sectors in Dobbek are
separated by servo sectors and are sometimes split by servo
sectors [brief, pages 8-10].
The examiner responds that it is notoriously well
established in the art that each disk must have servo sectors
between the data sectors [answer, page 7].
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Appellant responds that this statement by the examiner is
not supported by this record, and that the examiner has failed to
establish a prima facie case of the obviousness of the claimed
invention. Appellant also asserts that CD and DVD players for
audio and video expect every sector to have data. Appellant
argues that the hard disk format taught by Dobbek has separate
dedicated servo sectors that prevent the data sectors from being
contiguous [reply brief].
We will not sustain this rejection of the claims for
essentially the reasons argued by appellant in the briefs. The
examiner has improperly reduced the claimed invention to a
concept and then attempted to find that concept instead of
considering the specific language of the claimed invention. As
argued by appellant, each of the claims on appeal recites
contiguous data in the user-data area of the disk. Dobbek
discloses a disk which clearly has servo sector data positioned
within the user-data of the disk. Thus, we agree with appellant
that Dobbek does not teach or suggest the claimed contiguous data
in the user-data of the disk. The examiner’s position that every
disk must have servo data positioned within the user-data area of
the disk is not supported by any evidence on this record. To the
contrary, appellant has submitted evidence in support of
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appellant’s position that such servo data is not a requirement
for every disk. Therefore, the record in this case, when
considered as a whole, fails to support the examiner’s position.
In summary, we have not sustained either of the
examiner’s rejections of the claims on appeal. Therefore, the
decision of the examiner rejecting claims 8-11 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LEE E. BARRETT )
Administrative Patent Judge )
JS/ki
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Application 09/286,413
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